\
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`in the matter of Application Serial No. 78/010,660
`Published in the Official Gazette on March 12, 2002
`
`Eaton Corporation
`
`Opposer
`
`v.
`ABB Automation Group Ltd.
`Applicant
`
`}
`)
`%
`)
`}
`
`Opposition No.
`
`$3
`:_:__;
`5;
`3:;
`N 25‘:
`
`NOTICEOI-‘OPPOSITION
`
`Opposer, Eaton Corporation, an Ohio corporation located and doing business at Eaton
`
`Center, 1111 Superior Avenue, Cleveland, Ohio 44114-2584, believes that it will be damaged by
`
`registration of the mark shown in Serial No. 78/010,660 in international Class 7 (Machinery), and
`
`international Class 9 (Electrical and Scientific Apparatus), and hereby opposes the same.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`Applicant, ABB Automation Group Ltd.
`
`("ABB“) seeks to register
`
`the mark
`
`"ENGINEER lT" as a trademark in International Class 7 (Machinery) and lntemational Class 9
`
`(Electrical and Scientific Apparatus). A detailed listing of the goods recited in each of these
`
`classes is provided in Appendix 1 attached hereto and as is evidenced by the publication of the
`
`
`
`mark in the Official Gazette on March 12, 2002.
`
`2.
`
`During National Manufacturing Week, Monday-Thursday, March 15-18, 1999, at th
`
`industrial Automation Show and Conference held at McCormick Place South, Chicago,
`
`lllin
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`in the matter of Application Serial No. 78/010,660
`Published in the Official Gazette on March 12, 2002
`
`Eaton Corporation
`
`Opposer
`
`v.
`ABB Automation Group Ltd.
`Applicant
`
`}
`)
`%
`)
`}
`
`Opposition No.
`
`$3
`:_:__;
`5;
`3:;
`N 25‘:
`
`NOTICEOI-‘OPPOSITION
`
`Opposer, Eaton Corporation, an Ohio corporation located and doing business at Eaton
`
`Center, 1111 Superior Avenue, Cleveland, Ohio 44114-2584, believes that it will be damaged by
`
`registration of the mark shown in Serial No. 78/010,660 in international Class 7 (Machinery), and
`
`international Class 9 (Electrical and Scientific Apparatus), and hereby opposes the same.
`
`As grounds of opposition, it is alleged that:
`
`1.
`
`Applicant, ABB Automation Group Ltd.
`
`("ABB“) seeks to register
`
`the mark
`
`"ENGINEER lT" as a trademark in International Class 7 (Machinery) and lntemational Class 9
`
`(Electrical and Scientific Apparatus). A detailed listing of the goods recited in each of these
`
`classes is provided in Appendix 1 attached hereto and as is evidenced by the publication of the
`
`
`
`mark in the Official Gazette on March 12, 2002.
`
`2.
`
`During National Manufacturing Week, Monday-Thursday, March 15-18, 1999, at th
`
`industrial Automation Show and Conference held at McCormick Place South, Chicago,
`
`lllin
`
`
`
`Opposer through its wholly owned subsidiary, Cutler-Hammer lnc., ("CH") presented at its Booth
`
`#5732 its electrical soft starters and other electrical products with the unregistered trademark "IT
`
`(STYLlZED)" and service mark “DO IT RIGHT". Exhibit A attached hereto shows a copy of the VIP
`
`pass and associated promotional brochure from that show.
`
`3.
`
`The CH exhibit at the trade show described in paragraph 2 featured three stages
`
`with live presentations, a future technology pavilion, and a high-tech conveyor system with a
`
`complete, PC-based, open automation solution.
`
`Exhibit B includes pictures from that show
`
`revealing the open use of the unregistered trademark "IT (STYLIZED)" being used in connection
`
`with the electrical soft starter product line. Also, there are pictures of the "talent" singing and
`
`dancing with the "IT (STYLlZED)" boldly and prominently displayed.
`
`4.
`
`The Opposer has openly and continuously used the trademarks
`
`"IT",
`
`"IT
`
`ISTYLIZED)", and "INTELLIGENT TECHNOLOGIES"
`
`for
`
`its motor starters and electrical
`
`automation equipment throughout the U.S. since at least as early as the trade show described in
`
`paragraph 2. Exhibit C is a copy of a CD jacket and CD illustrative of such use.
`
`5.
`
`The Opposer's unregistered trademarks ‘'IT'' and "IT (STYLlZED)", and unregistered
`
`service mark "DO IT RIGHT" are similar to or resemble the Applicant's proposed mark "ENGINEER
`
`IT“, which simply combines the word "ENGlNEER“ with the word "IT", and the goods are
`
`sufficiently similar so as to create a likelihood of confusion in this market, or to cause mistake, or to
`
`deceive.
`
`
`
`
`
`6.
`
`The Opposer's use of the unregistered trademarks "lT", "lT (STYLlZED)", and/or the
`
`unregistered service mark ''DO IT RIGHT" pre-date Applicant's filing date.
`
`7.
`
`Exhibit D is a copy of an advertisement from the magazine titled "lCS" dated
`
`November, 1999. The Applicant also advertises in that same magazine as evidenced by their
`
`advertisement therein. Still another advertisement from a company called Omron Electronics is
`
`shown in that same magazine with a stylized "SOLVE lT" trademark. The Applicant's proposed
`
`mark is subsequent in use to either of these marks and is likely to cause mistake or create a
`
`likelihood of confusion in the relevant market.
`
`8.
`
`There is no issue as to priority of use. The Applicant's date of use is subsequent to
`
`the Opposer's use.
`
`9.
`
`The Opposer has sold goods of a related nature to that listed in both classes in the
`
`Applicant's application throughout the United States openly and continually. The Opposer has
`
`developed valuable goodwill with respect to its unregistered marks and has attained federally
`
`protectable common law rights in its marks.
`
`10.
`
`Through its efforts and the expenditure of considerable sums for promotional and
`
`advertisement activities, and by virtue of the excellence and quality of its products, the Opposer
`
`has gained for its marks a most valuable reputation and distinctiveness.
`
`11.
`
`if the Applicant is permitted to use and register its mark for these goods in these
`
`classes, as specified in the application herein opposed, confusion in trade resulting in damage and
`
`
`
`injury to the Opposer would be caused and would result by reason of the similarity between the
`
`Applicant's mark and the Opposer‘s marks. Persons familiar with the Opposer‘s marks and goods
`
`or services would be likely to buy Applicant's goods as and for products made and sold by the
`
`Opposer. Any such confusion in trade inevitably would result in loss of sales to the Opposer.
`
`Furthermore, any defect, objection or fault found with Applicant's products marketed under this
`
`mark would necessarily reflect upon and seriously injure the well established reputation which the
`
`Opposer has established for its products merchandised under its marks.
`
`12.
`
`The trademark proposed for registration by the Applicant, namely "ENGINEER lT",
`
`would be taken by purchasers in this trade with its commonly understood meaning to simply
`
`designate a custom built electrical device.
`
`13.
`
`if the Applicant is granted the registration herein opposed, it would thereby obtain at
`
`least a prima facie exclusive right to the use of these two commonly understood words "engineer"
`
`and "it" in a phrase commonly used in the English language. Such registration would be a source
`
`of damage and injury not only to the Opposer but to others in the electrical and mechanical
`
`industries who use these words to indicate to their customers their respective abilities. Such
`
`registration would require Opposer and the trade to abandon its use and change its promotional
`
`and advertising tactics, all to the great expense and detriment of Opposer as well as others.
`
`WHEREFORE, Opposer prays that
`
`the Application Serial No. 78/010,660 for
`
`the mark
`
`"ENGINEER lT" be rejected and that the mark herein sought for the goods therein specified in international
`
`Classes 7 and 9 be denied and refused. That no registration be issued thereon to Applicant, and that this
`
`Opposition be sustained in favor of Opposer.
`
`
`
`Opposer hereby gives notice under Rule 2.122 (cl) of the Rules of Practice that after hearing and
`
`in any appeal on this Opposition proceeding, it will rely on its Exhibits annexed to this Notice of Opposition
`
`as evidence as well as other evidence in support of this Notice of Opposition.
`
`A duplicate copy of this Notice of Opposition is enclosed herewith and the fee required in Section
`
`2.6 (a) (17) of $300.00 per class for a total amount of $600.00 is hereby authorized to be charged to our
`
`Deposit Account provided in the cover letter accompanying this Notice of Opposition. A duplicate copy
`
`of the fee authorization is enclosed herewith.
`
`Respectfully submitted,
`
`EATON CORPORATlON
`
`BY _@_/4%;
`
`Daniel S. Kalka
`
`Attorney at Law
`Eaton Corporation
`Eaton Center
`
`1111 Superior Avenue
`Cleveland, Ohio 44114-2584
`
`CERTIFICATE OF MAILING
`
`I hereby certify that this correspondence is being deposited with the
`United States Postal Service with sutticient postage as first-class mail in
`an envelope addressed to:
`
`of person signing certificate
`
`Assistant Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Typed or printed name
`
`
`
`APPENDIX I
`
`Word Mark
`
`ENGINEER IT
`
`Goods and Services
`
`IC 007. US 013 O19 O21 023 031 034 035. G & 8: Industrial robots
`
`IC 009. US O21 O23 O26 O36 038. G & S: Apparatus and instruments for
`measuring, analyzing,
`recording, controlling and regulating physical
`quantities,
`chemical
`properties,
`and industrial processes
`namely,
`flowmeters,
`scanners,
`sensors,
`actuators,
`valves,
`transmitters
`for signals, temperature and pressure, positioners, converters, recorders,
`gas
`and
`liquid
`analyzers; water,
`gas,
`electricity
`and
`energy
`meters; computers, microprocessors; computer programs, namely, for use
`in process plant data acquisition, design, software production, operation,
`installation and commissioning, electrical cables, conductors, wires;
`substation automation equipment namely controllers
`for
`substation
`environment and protection performance, namely, controllers for current
`protection, earth fault protection, voltage protection, frequency protection,
`thermallenergy protection,
`line/cable distance protection,
`line/cable
`differential protection,
`transfer differential protection, busbar differential
`protection, generator protection, motor protection,
`capacitor bank
`protection,
`railway supply protection, software for use in an electrical
`substation, namely,
`software for setting protection parameters and
`providing an interface to an operator, software for analyzing faults,
`software for retrieving a disturbance record, software for allowing remote
`retrieval of disturbance data, software for monitoring and controlling a
`substation electrical
`network,
`software
`for
`remotely controlling
`a
`substation by supervisory control and data acquisition (SCADA), software
`for
`providing
`an
`interface
`to
`an
`operator,
`software
`for
`configuring and tuning a substation control application, software for
`analyzing data,
`namely software
`for
`analyzing faults data,
`fault
`location data, software for managing maintenance of a substation; and
`power system protective relays
`
`
`
`EXHIBIT A
`
`
`
`
`
`
`
`EXHIBIT B
`
`
`
`
`
`
`
`
`
`EXHIBIT C
`
`
`
`
`
`
`
`
`
`EXHIBIT D
`
`
`
`November 7999
`
`
`
`—swans;aoamooéaaNuvmawnausm
`
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`§‘3‘0'§88.3.§1':33!C4’-5PAULHAND‘
`
`LEcunenHAIIEHER
`
`
`
`<4201N27THsr/4201N27msr
`
`\MILWAUKEE.5_3216—1§_397
`
`CIMPLICITY OpenProcess
`PI»casx> Control Station .1
`
`U “Designing operator
`w‘o‘r,l<»stéaf:'onsfor harsh and
`hazardous environments p 73
`
`
`
`
`
`Answering the industry's request for safer
`
`operating voltages, simpler compliance, and
`more reliable interfacing, Cutler~Hammer
`
`developed Intelligent Technologies (IT) Soft
`
`Starters. Our fully integrated, solid~state
`
`reduced voltage starters aren't just 30-80%
`
`smaller than any other starter. They operate at
`
`24V dc—for safer, more cost-effective control.
`
`Our revolutionary microprocessor design
`
`NEVER HAS so MUCH
`
`MOTOR PROTECTION
`
`with full wave, 6 bridge SCRs, built—in bypass
`
`contactors, and overload protection does not
`
`BEEN PACKED INTO
`
`require separate isolation contactors or
`
`overload relays. A single unit also integrates
`
`SUCH A SMALL SIZE.
`
`voltage ramp and current—limiting start to
`
`save panel space and wiring costs.
`INTRODUCING /NTELLIGENT TECHNOLOGIES SOFT STARTERS.
`
`Much smaller, yes. But packed with more
`
`control and protection features than ever
`
`before. Like fully adjustable starting torque
`
`and time, kick-start, and soft stop options for
`
`optimal performance plus reduced stress on
`
`the drive system, less potential for product
`
`damage or personal injury, and an
`
`easier way to meet power quality
`
`requirements. You get overload,
`
`stall, jam, phase loss, phase reversal,
`
`and SCR over temperature protection.
`
`Plus potentiometers, DlP switches, and
`
`LEDs are provided in an easy to use device-
`
`mounted display for quick and easy, new or
`
`retrofit, configuration requirements.
`
`To get your hands on an IT Soft Starter or
`
`for more detailed information about features
`
`and models, call 800-440-5705, circle our
`
`reader service number, or visit
`
`www.cutlerhammer.eaton.com/lT.
`
`
`
`
`
`
`
`INTHE UNITEDSTATESPATENTANDTRADEMARKOFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`in the matter of Application Serial No. 78/010,660
`Published in the Official Gazette on March 12, 2002
`
`Opposition No.
`
`lllllllIllllllllllllllllllllllllIlllllllllllllllll
`o7_1o_2oO2
`u.s. Patent at TMo1c/TM Mall Rcpt DL #61
`
`I 1
`
`I
`
`} }
`
`Eaton Corporation
`
`Opposer
`
`"-
`
`ABB Automation Group Ltd.
`Applicant
`
`TRANSMITTAL LETTER AND FEE AUTHORIZATION
`
`Assistant Commissioner of Trademarks
`
`2900 Crystal Drive
`Arlington, Virginia 22202-3513
`
`Attn: Box TTAB Fee
`
`Dear Sirs:
`
`Enclosed herewith is the Opposer's Notice of Opposition submitted in duplicate.
`
`The Assistant Commissioner is hereby authorized to charge the fee of $300.00 per class
`
`pursuant to §2.6 (a) (17) to our Deposit Account No. 05-0275 for a total fee of $600.00. A duplicate
`
`copy of this authorization is enclosed herewith.
`
`Eaton Corporation
`Eaton Center
`1111 Superior Avenue
`Cleveland, Ohio 44114
`(216) 5234131
`
`Respectfully submitted,
`
`14...,//1/74,1
`
`Daniel S. Kalka
`Registration No. 32,654
`Attorney for Opposer
`
`CERTIFICATE OF MAILING
`
`
`
`
`I hereby certify that this correspondence is being deposited with
`the United States Postal Service with sufiiclent postage as first-
`isioner
`class mail in an envelope addressed to: Assista
`
`
`
`
`forTrad?marks,2900Crystal Drive -
`'
`'
`on
`It
`
`Date
`
`
`
`Melissa Henthorn
`Name
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